COMMISSIONER LEHMAN: Good morning. My name is
Bruce Lehman. I am Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks.
Joining me this morning at his hearing are Michael
Kirk, the Deputy Assistant Secretary of Commerce and Deputy
Commissioner of Patents and Trademarks, to my immediate
left.
And then, Lawrence J. Goffney, Jr., Assistant
Commissioner for Patents; and Stephen Kunin, the Deputy
Assistant Commissioner for Patent Policy and Projects; and
Nancy Linck, the Solicitor of the U.S. Patent and Trademark
Office.
This is a hearing on proposed rule changes to
implement 20-year patent term and provisional applications
and to modify certain procedures for filing and continuation
of provisional applications.
The proposed changes would amend 37 C.F.R. Parts 1
and 3. The proposed rules were published on December 12,
1994, in Volume 59 of the Federal Register, at pages 63951
through 63966, and on January 3, 1995, in Volume 1170 of the
Official Gazette of the U.S. Patent and Trademark Office, at
pages 377 through 390.
The request for comments on changes to a 20-year
patent term and its effects on patent expiration and patent
term extension under 35 U.S.C. 156 was published on January
17, 1995, in Volume 60 of the Federal Register, at pages
3398 and 3399.
Oral testimony relating to patent term extension
under 35 U.S.C. 156 will begin this afternoon at 1:00 p.m.
On December 8th of last year, 1994, President
Clinton signed the Uruguay Round Agreements Act, Public Law
103-465. Most of the provisions of the legislation will
take effect on January 1, 1996. However, provisions
relating to patent term and provisional application will
take place sooner than that, on June 8, 1995.
The legislation that President Clinton signed
amended 35 U.S.C. 154 by establishing a 20-year patent term
from the date of filing of the application. This
legislation provides safeguards for applicants where the
issuance of the patent was delayed due to interferences,
secrecy orders, and/or successful appeals to the Board of
Patent Appeals and Interferences or to the Federal courts.
In these cases, applicants are entitled to patent term
extension of up to five years.
The legislation also includes transitional
measures to minimize the need to file continuing
applications after the effective date of the 20-year patent
term provisions, that is, June 8, 1995.
These transitional measures will change the after,
final, and restriction practices for certain applicants.
The legislation also provides for the first time the filing
of provisional applications. The filing of the provisional
applications will not be counted in the measurement of the
term of a later-filed application which claims the benefit
of the earlier-filed provisional application, in effect, a
21-year term.
A transcript of these hearings will be prepared
and a copy will be made available for purchase by the public
approximately 10 days after this hearing. Copies of the
transcript will also be available for purchase directly from
the stenographer, if you so choose, and the name of the
stenographic service today is Miller Reporting. Their
telephone number is (202) 546-6666. That is, (202) 546-6666.
We received 18 written comments and 25 requests to
appear orally at this hearing this morning. Due to the
number of requests to appear orally and to permit those
persons signing up today to present testimony, we are going
to ask each speaker to hold their comments to 10 minutes.
Those persons who wish to provide additional
comments may, time permitting, continue their testimony at
the end of today's hearings or may submit their comments to
the Patent and Trademark Office in writing.
The speakers have been listed in the order in
which their requests were received by the Office. Any
persons who wish to speak and who have not previously
informed us of their desire to do so are requested to add
their names to the list located at the table in the rear of
the room. You may also pick up at the table copies of the
Federal Register publication of the rules change proposal.
When you present your comments, please give your
name and address, and whether the comments presented are
your own, those of your law firm or company, or whether you
represent an organization and are presenting comments on
their behalf.
I would like to make an observation about this
hearing this morning, and that is that the hearing is not
about the wisdom of the legislation that Congress enacted
last fall. The hearing is about implementing that
legislation, and so, I would hope, out of fairness to the
people who have come to talk about the Federal Register
notice, that witnesses would keep that in mind in presenting
their testimony.
I would also like to say, too, that in that
regard, probably the most important two people who are here,
in that regard, on the Panel this morning, are Assistant
Commissioner for Patents Larry Goffney, and Steve Kunin, the
Deputy Assistant Commissioner for Policy and Projects
because they will be the ones primarily responsible for
implementing this change, because Commissioner Goffney
really is in charge of our patent operation.
I also would just note that it may be, given the
press of business in Washington and lots of other things
that are going on, that I may have to depart and not be here
for all of the testimony. But rest assured that
Commissioner Goffney and other members of the Panel will be
here and we will have a written transcript of everyone's
comments.